Appeal No. 95-3094
Application No. 07/975, 141
the oral hearing, the claim language "continuous" limits the
claimed tow to a material of indefinite length which may be
thousands of feet in length.
With respect to the other prior art references relied on
by the examiner, Hicks, Nina and Smith, the Warren declaration
provides convincing technical reasons why the prior art
techniques described in these references could not have been
successful employed to manufacture the claimed tow. See
paragraphs 19-23 of the declaration.
Based on the record before us, we agree with appellants
that the prior art references relied upon by the examiner
would not have enabled one skilled in the art to prepare a
product such as suggested or "conceived" by Baucom. It is a
fundamental tenet of patent law that references relied upon to
support a rejection under 35 U.S.C. § 103 must provide an
enabling disclosure, i.e., that must place the claimed
invention in the public’s possession. In re Payne, 606 F.2d
303, 314, 203 USPQ 245, 255 (CCPA 1979).
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